The Lessons of March Madness: Companies would do well to pay careful attention to trademarks

It’s that time of year again. As the weather swerves crazily from one extreme to the other, a sporting event that takes its nickname from the same intemperance is occupying center stage. March, basketball and madness are inextricably linked in the hearts and minds of many sports fans. But one lawyer, who has no personal stake in the matter, has a warning. Beware of March Madness. Do not take it in vain (at least not for personal gain). David Radack is an IP lawyer at Eckert Seamans Cherin & Mellott LLC, and he’s here to tell you that the NCAA doesn’t take kindly to businesses that violate its trademarked words and phrases.

MCC: Has March Madness always been a trademark held by the NCAA?

Radack: Actually, the term was coined in 1939, believe it or not, for the Illinois High School Association state basketball championship. It was coined in 1939 and used through the thirties, forties, fifties and sixties. It wasn't until the early 1980s, when a sportscaster named Brent Musburger – and if you’re familiar with sports, you probably know that name –was doing the NCAA tournament. And because Musburger was from Chicago and because he knew the Illinois state high school tournament, he just started referring to the NCAA tournament as March Madness.

So, inevitably, what happened was there was a clash between the Illinois high school people, who said, "We own March Madness," and the NCAA, saying, "No, you only own it for high school; we own it for college." What they did in settlement of that litigation, in about 2002, they did a smart thing. The High School Association and the NCAA decided, "We're going to form an entity, and we are going to put all of our rights into that entity, it's called March Madness LLC. We can use that entity, and we will both own pieces of that entity, to license the trademark so that we're not in constant conflict.”

So, that's where March Madness came about. And just recently the NCAA, I think, bought out the high school tournament. There was no indication of the money, but it was probably really big. And now the NCAA clearly owns the term March Madness.

MCC: OK. What are some of the related terms that have been trademarked since?

Radack: Well, “Final Four” is trademarked. “Elite Eight,” that's trademarked. The interesting thing that's going on now, I think, are brackets and what the NCAA is claiming they own with brackets. Are you familiar with the bracket? Filling in a bracket, bracket pools and that kind of thing?

MCC: Yes, I am. Office pools.

Radack: Well, the NCAA will allow, and this is where the newspapers come in, they will allow a newspaper or a magazine to print a bracket. However, they will not allow you to put advertising inside the bracket. So, if you’re a newspaper and you print a bracket, and in order to sell that bracket to your advertiser, you say, "Hey, I'll put your logo in the middle of this bracket," the NCAA is not going to like it, and you will get a cease-and-desist letter off of that.

MCC: Because they're saying the bracket itself is trademarked.

Radack: Correct! They have common law rights. They have rights in a bracket during the NCAA tournament. A client of mine came and said, "Hey, we want to do a bracket of different subs that we offer. Chicken subs, chicken Parmesan, and we want to have a winner. We want to run it during March, and we want to call it 'A Bracket Challenge.'" I would say that's fine as long as you don't put a basketball on it, you don't put a hoop, you don't use college names, you don't call it March Madness. But the minute you publish a bracket that has all of the NCAA teams in it, and you put advertising in it, the NCAA is going to say, "Whoa, wait a minute. You’re trading on our rights to a bracket, and therefore you’re violating our trademark."

MCC: Now, obviously, when we hear about something like this, it's an aberration. Are most of these types of cases big-money cases or not?

Radack: I don't think so. I read an interview with the NCAA's outside counsel, and he said, basically, that they send out hundreds of cease-and-desist letters a year for people violating their trademark. He said the vast majority of them write back and say, "We didn't know we were doing that; we'll stop." With most of those cases, they'll let you alone. But sometimes, people will push. And, obviously, the bigger the fish, the more money. If you have a national ad campaign – I don't think any national advertiser would ever do this, but, for example, a car company says, "This is our March Madness promotion." They're going to get a very quick and severe cease-and-desist letter, and they might have to pay damages.

Most sophisticated advertisers are going to run this by their counsel. Their counsel is going to say, "Hey, you can't use that unless you are licensed by the NCAA."

MCC: In general – not specifically about March Madness – what should companies do to ensure that they are not on the wrong end of one of these trademark disputes?

Radack: Make sure you have someone in-house or somebody outside that understands trademark law. Realize that you can't use people's trademarks. A lot of people fall into the trap of, "Well, everyone else is using it, so I can do it, too." But they don't realize that everyone else is using it in a fair use, or in a First Amendment or a freedom of the press type of situation, not commercially.

So, in order to avoid that, make sure your advertising doesn't use other people's trademarks and is vetted so that you avoid getting a cease-and-desist letter. Because getting one can be a real pain. It means you have to change, if it's on a product or if it's on your website, you have to change all that stuff. It's certainly much more expensive to do that than to, well, you know, the old ounce of prevention is worth a pound of cure.

MCC: Do you advise companies and your clients to use the services that are looking for the violations of their trademarks?

Radack: Yeah, if it is an important trademark. If it's a house mark or an international brand, sure, you want to make sure that they use these services. Because things could pop up overseas. You can get international watches too that will monitor international trademark offices for people who may be filing your mark with trademark pirates or people who build designs, who try to register your mark when you don't want them to.

So, obviously, the more important the mark, the more investment you have to make into it. If it's a local company, maybe I'll advise them to have somebody on their staff get Google Alerts or something like that to make sure they are monitoring the internet.

MCC: Is there anything you wanted to add? I think we covered a lot of ground.

Radack: No, that's it. It’s just always a fun time of year. I love March Madness.

MCC: Any brackets at your law firm?

Radack: [Laughter] Yeah, we have one. And then me and my kids have one. My son went to Villanova, and they won the national championship last year, so we are big college basketball fans.

MCC: Did you cash in on that success?

Radack: You know, that's funny. A couple years before that, I was picking them to win, and last year, since they had gone out so early in recent years, I said, “You know what, I'm not going to make that same mistake this year.” And of course the year I don't pick them, they win.

MCC: I guess that's why they call it March Madness.

Radack: [Laughter] Exactly!

David Radack is a partner at Eckert Seamans Cherin & Mellott LLC, where he represents clients in the full spectrum of intellectual property law, including patents, trademarks, copyrights and trademark licensing. He has extensive experience practicing both in the courts and before the U.S. Patent and Trademark Office. He can be reached at dradack@eckertseamans.com.